• Askeladden, L.L.C. v. Ohva, Inc.All claims unpatentable
  PTAB · Mar 10, 2025 · IPR2023-00921 · APJ Amee A Shah · IPR · Final written decision

  Claims 1–4 are unpatentable as obvious: claim 1 over Cho, Aaron, and Carpenter; claim 2 over those references and de Geer; claim 3 over Cho and Aaron; and claim 4 over Cho, Aaron, and de …

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “application are similar, as indicated by the redline comparison of two provided as Exhibit 1015. Critically, however, the “Summary of the Invention” sections are completely different. Id. at 2–4. The question is whether one of ordinary skill in the art would have understood with reasonable clarity, without the benefit of the Summary added for the ’286 patent/’674 application, that the ՚030 application describes a smart telephone that executes coded instructions to “convert the analog variable voltage audio signal received at the microphone port to the transaction data as digital data.”” slip op. at 43

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Here, although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. The evidence indicates that the claimed “transaction data” is distinct from the “transaction data B1-Bn” described in connection with the Figure 11 embodiment.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “As discussed above in Section II.C, we construe the term “transaction data” as encompassing any data involved in a transaction, including account data. Again, we emphasize that claim 1 requires that the transaction data is accepted by the card reader from an output interface of the transaction card. Cho provides that card reader 230 reads a digital signal that includes account information of card 130 whereby the account information “may include at least one of an account number, a card expiration data, etc.” Ex. 1005, 5:54–58. We further agree with Petitioner that to the extent “transaction data” is for the purpose of conducting banking transactions, Cho’s account data of a credit card number and expiration date can perform that purpose. Patent Owner’s arguments that the transaction data cannot be “static” and that claim 1 requires “processing actual transaction-specific data” are not commensurate with the scope of the claim 1. The claim does not recite any limitations that the transaction data be dynamic or “not static,” nor does it recite any processing of the transaction data outside of using it to “facilitate transactions.” Petitioner has shown that Cho teaches the claimed transaction data.” slip op. at 55

  Patent outcomesUS 9,679,286 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,679,286
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00540 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 21–30, 36, and 37 are unpatentable as obvious; the Revised Motion to Amend is denied, and the Motion to Exclude is dismissed as moot.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “G. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “B. Other Claim Terms The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., 200 F.3d at 803).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Accordingly, we find that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine the teachings of Armitage and Barone in the manner suggested. ix. Summary as to Claim 1 We find that Petitioner has shown sufficiently that the combination accounts for the limitations of claim 1, and that a person of ordinary skill would have been motivated to combine Armitage and Barone with a reasonable expectation of success. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claim 1 would have been obvious over Armitage and Barone.” slip op. at 35

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “include selection of data along certain axes or combinations of axes measured by the accelerometer and ignoring unselected data, well-supported and entitled to substantial weight. See Ex. 1025 ¶¶ 4–6. We find Dr. Shamos’s testimony to the contrary, Ex. 2006 ¶¶ 40–42, inconsistent with the disclosure of the challenged patent, and entitled to little weight. Patent Owner argues that Armitage does not monitor all of the axes, like the ’915 patent. See Sur-reply 1–3. However, the ’915 patent, just like in Armitage, isolates the data from a single axis for further analysis. See Ex. 1001, 13:17–24. Thus, we do not find Patent Owner’s distinction to be persuasive. Accordingly, we find that Petitioner has shown that Armitage accounts for this limitation.” slip op. at 24

  Patent outcomesUS 10,137,915 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,137,915
• Askeladden, L.L.C. v. Ohva, Inc.Rehearing granted
  PTAB · Mar 15, 2024 · IPR2023-00921 · APJ Amee A Shah · IPR · Rehearing

  Granted petitioner’s rehearing request and instituted IPR of claims 1–4 on all asserted grounds, finding a reasonable likelihood of prevailing based on the preliminary construction of “transaction data.”

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c).” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s embedded token, i.e., the output interface of the transaction card. See Ex. 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. Such claimed “transaction data” is distinct from the “transaction data” described in connection with the Figure 11 embodiment. We therefore do not limit the claimed “transaction data” and instead preliminarily construe that term as encompassing any data involved in a transaction, including account data. As described above, the claimed transaction data must come from the output interface of a transaction card. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateInstituted

    “The dispute relates to whether the ’030 application describes the claimed “smart telephone” accepting transaction data and executing coded instructions to convert the analog signal to digital data representing transaction data as digital data. See Pet. 14–15, 19–27. In Petitioner’s view, that term is supported only by language added to the “Brief Summary of the Invention” during prosecution of the application resulting in the ’286 patent. Id. at 17. In contrast, argues Petitioner, the corresponding section of the ’030 application instead describes transmitting sound to a PC, not a smart telephone. Id. at 19–26. Patent Owner submits that the ’030 application describes generating sounds from a smart phone and using a “key jack sound pass generator” to communicate sounds. Prelim. Resp. 16. Patent Owner contends that the claim language is supported by disclosure of receiving the audio signal at a microphone port and converting the signal to transaction data. Id. at 16–18. Patent Owner points also to description of direct communication between a “client device” and server. Id. at 19. On the present record, we find that Petitioner, at this stage in the proceeding, has shown sufficiently how it contends that the earliest possible effective filing date for claims 1–4 of the ’286 patent is March, 3, 2015, such that the Cho, Aaron, Carpenter, and de Geer references qualify as prior art. Patent Owner has identified a factual dispute regarding the significance of the ’030 application’s disclosures, and we view that dispute as best resolved through trial.” slip op. at 9

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “35 U.S.C. § 312(a)(2) provides that one of the “Requirements of Petition” is that “the petition identifies all real parties in interest.” “Whether a non-party is a RPI is a ‘highly fact-dependent question’ and must be considered on a case-by-case basis.” SharkNinja Operating LLC. v. IROBOT Corp., No. IPR2020-00735, 2020 WL 6050687, at *4 (PTAB Oct. 13, 2020) (precedential) (citing Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper 148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). Here, addressing whether TCH is an unnamed RPI would not create a time bar or estoppel under 35 U.S.C. § 315. There is no allegation or evidence that TCH is “barred or estopped from this proceeding or that Petitioner purposefully omitted [TCH] to gain some advantage.” SharkNinja at *4. Rather, Patent Owner argues that for “once again willfully fail[ing] to identify TCH as a real party in interest, . . . the Petition should be denied on that basis.” Prelim. Resp. 7. In other words, Patent Owner contends only that we deny institution because of “the alleged failure of a procedural requirement that can be corrected under our precedent.” SharkNinja at *4. We understand that” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,679,286
• Popsockets LLC v. Flygrip, Inc.All claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00937 · APJ Hyun J Jung · IPR · Final written decision

  Claims 2 and 8 are unpatentable under § 103 over the ’476 Publication and Hobbs because that combination teaches all limitations and has a supported motivation to combine.

  RulingsFinal written decision

  • Strike new argumentDenied

    “evidence with its Sur-reply, “other than deposition transcripts of the cross-examination of any reply witness,” but Petitioner does not explain adequately why these exhibits constitute “new evidence” to Petitioner, when they are, or should have been, the bases of its analysis regarding the asserted priority date of the challenged claims. See Pet. 17–41 (analyzing the asserted priority documents, the chain of priority to the Provisional Application, and the prosecution history of the ’024 patent). Some of the exhibits, such as Exhibits 2027 and 2028 (the as-filed grandparent and parent applications), should have already been included in the record. Patent Owner also violates our Rule 42.6(d), which states that “[a] document already in the record of the proceeding must not be filed again, not even as an exhibit or an appendix, without express Board authorization.” If we granted Petitioner’s motion, then Patent Owner’s citations to some documents already of record, and filed by Petitioner, would become meaningless and would deprive us of the ability to analyze documents already properly filed in view of the parties’ arguments. For the reasons above and on the facts of this proceeding, Petitioner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We, therefore, deny Petitioner’s Motion to Strike.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “1012–1019, along with others, for the declaration filed with the Petition. Ex. 1025 ¶ 5. These exhibits show the basis for the testimony in the declaration, and an expert may rely on hearsay in forming an opinion under Federal Rules of Evidence 703. To the extent they are hearsay, we would limit their purpose to showing the basis for testimony. Also, dictionary definitions are routinely considered extrinsic evidence that may shed light on the plain and ordinary meaning of a claim term. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (“Within the class of extrinsic evidence, the court has observed that dictionaries . . . can be useful in claim construction.”) (citation omitted). For the reasons explained by Petitioner (Paper 24, 6), the definitions were not offered for the truth of the matter asserted, and, thus, we do not consider these exhibits hearsay. For the reasons above, Patent Owner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We also do not rely on any of Exhibits 1004–1008 and 1012– 1019 to reach our determination. In view of the above, Patent Owner’s Motion to Exclude Exhibits 1004–1008 and 1012–1019 is denied.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design” (Pet. 11) and Patent Owner contends that one of ordinary skill in the art would have had a “bachelor’s degree in a technical field and at least 1 year of experience with product development” (PO Resp. 14), the parties substantially agree with respect to these aspects of their proposals for the level of ordinary skill. Petitioner contends, in the alternative, that the ordinarily skilled artisan would have had “five years or more of experience in mechanical product design,” but Patent Owner alternatively contends that the ordinarily skilled artisan has “a college degree in a non-technical field and at least 3 years of experience in product development.” Pet. 11; PO Resp. 14 requires more years of experience than Patent Owner’s alternate person of ordinary skill in the art. See Pet. 11; PO Resp. 14. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art “would have had either (1) five years or more of experience in mechanical product design, or (2) a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design.” Pet. 11 (citing Ex. 1025 ¶¶ 25– 27). Based on the full record and for the reasons below, even if we adopted Patent Owner’s proposed level of ordinary skill, our determination would be the same.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We agree with Petitioner that, in this proceeding, “conical” does not require an express interpretation to resolve the parties’ disputes. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In the related proceeding, we determined that one of ordinary skill in the art would understand that the term “conical” does not exclude cones with a pyramidal shape. PopSockets LLC v. Flygrip, Inc., IPR2022-00938, Paper 29 at 19 (PTAB Oct. 30, 2023). To the extent any issue in this proceeding would implicate the interpretation of “conical,” we apply the same determination.” slip op. at 15

  Patent outcomesUS 10,800,024 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 10,800,024
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.Instituted
  PTAB · Aug 11, 2023 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Institution

  The Board instituted IPR on claims 1–10, 13–18, and 20–32 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on this record, it appears that the main distinction between Petitioner’s ordinary skilled artisan and Patent Owner’s is that Patent Owner further requires familiarity with wireless networks. We note, however, that the monitoring systems of the asserted prior art include wireless networks. In view of this, because Petitioner’s requirement of experience designing railcar, train, vehicle, or any other similar monitoring systems includes some familiarity with wireless networks, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’223 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “this proceeding. Pet. 15. Patent Owner asserts that the term “housing” means “an enclosure.” Prelim. Resp. 29. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “30 of the ’223 patent are entitled to claim priority back to the ’713 application. The test for sufficiency of written description “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In particular, we do not agree with Patent Owner that it can simply pluck the temperature sensor from LeFebvre and insert it into the sensor device disclosed in the ’713 application. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (“Working backward from a knowledge of [the claims], that is by hindsight,” [patentee] seeks to derive written description support from an amalgam of disclosures plucked selectively from the [prior] application.”) (first alternation in original).” slip op. at 17

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,365,223
• Lti Flexible Products, Inc. D/B/A Boyd Corporation v. The Regents Of The University Of CaliforniaNo claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01189 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–13 were not shown unpatentable because MacDonald was not prior art and the petition failed to establish anticipation or obviousness; the contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “The full record makes clear that the parties do not dispute the portion of Petitioner’s proposed level of ordinary skill regarding education and years of experience. Compare Pet. 14–15, with PO Resp. 3. Patent Owner acknowledges that the analysis does not depend on whether Petitioner’s proposed level of ordinary skill or Patent Owner’s proposal is adopted. See PO Resp. 3–4; Ex. 2003 ¶ 34 (testifying that Patent Owner’s declarant has an understanding of the capabilities of one of ordinary skill in the art irrespective of which proposed skill level is adopted), ¶ 35. The parties’ proposals are consistent with the factors of GPAC, the disclosure of the ’728 patent, and the prior art of record. Ex. 1012 ¶ 71 (testifying that Petitioner’s proposed level of ordinary skill is based on considering the factors of GPAC); Ex. 2003 ¶ 32 (testifying that Patent Owner’s proposed level of ordinary skill is based on the ’728 patent); GPAC, 57 F.3d at 1579. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art would have had “(1) a bachelor’s degree in mechanical engineering or a similar field that includes thermal sciences; and (2) at least two years of industrial experience on the design and evaluation of thermal management of electronic systems and heat pipes/TGPs.” Pet. 14–15; Ex. 1012 ¶ 71; Ex. 2003 ¶ 35. We agree with Patent Owner that the analysis would not be affected by adopting Patent Owner’s proposed level of ordinary skill in the art. PO Resp. 3–4; Ex. 2003 ¶ 35.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Petitioner contends that “the ordinary and customary meaning of the term ‘pitch’ in [c]laim 9 encompasses the definition of ‘pitch’ given in [c]laim 1—‘a distance from a center of one microfabricated structure to a center of a next neighboring microfabricated structure.’” Pet. 15. No claim term was interpreted expressly for our Institution Decision. Inst. Dec. 10. Patent Owner does not propose expressly any interpretation for any claim term. See generally PO Resp. Patent Owner, however, states that “claim 1 of the ’728 Patent expressly defines the claimed ‘pitch’ of the microfabricated structures as being ‘a distance from a center of one microfabricated structure to a center of a next neighboring microstructure.’” Id. at 12 (citing Ex. 1001, 14:45–48). Patent Owner notes that “[c]laim 9 does not include this particular definition, but the Board apparently applied the definition of the ‘pitch’ limitation in claim 1 to claim 9, as did Petitioner.” Id. “Patent Owner does not dispute or disagree with this.” Id. Based on the full record and because the parties do not dispute it, we apply the definition of pitch in claim 1 to the recited pitch of claim 9. Also, based on the full record, we determine that no other claim term requires express interpretation. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable

    “Petitioner appears to be seeking verbatim support, when, as argued by Patent Owner, the Specification does not need to provide exact or verbatim support to meet the written description requirement. See Pet. 20; PO Resp. 32. One of ordinary skill in the art would have immediately discerned that 5–500 microns is well within 2–1500 microns calculated by Petitioner using the parent applications’ claim 2. See Pet. 21–22; PO Resp. 16–17; Ex. 2003 ¶ 47. The numerical differences between the derived and claimed ranges do not address sufficiently why one of ordinary skill in the art would not discern the claimed range. See Pet. 20. As determined above, the disclosure would allow one of ordinary skill in the art to recognize that the claimed “distance from a center of one microfabricated structure to a center of a next neighboring microfabricated structure” has a range of values, such as the 2– 1500 microns calculated by Petitioner. See id. at 22. The numerical differences between the calculated ranges and the claimed ranges alone fail to show that the ordinarily skilled artisan would not have discerned the claimed range of 5–500 microns from the range of 2–1500 microns.” slip op. at 42

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Patent Owner responds that “[b]ecause MacDonald does not qualify as prior art against the claims of the ‘728 Patent, Petitioner has failed to show that the challenged claims of the ‘728 Patent . . . would have been obvious over MacDonald in view of Ding.” PO Resp. 40. No reply arguments are presented specifically for the obviousness challenge. See generally Pet. Reply; PO Sur-reply. For the reasons given above, we agree with Patent Owner that MacDonald is not prior art to the ’728 patent. PO Resp. 39. Accordingly, based on the full record, Petitioner fails to show by a preponderance of the evidence that MacDonald and Ding would have rendered obvious claims 2, 3, and 7.” slip op. at 51

  Patent outcomesUS 10,309,728 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,309,728
• Lti Flexible Products, Inc. D/B/A Boyd Corporation v. The Regents Of The University Of CaliforniaInstituted
  PTAB · Jan 11, 2022 · IPR2021-01189 · APJ Hyun J Jung · IPR · Institution

  The Board instituted IPR on claims 1–13, finding a reasonable likelihood that MacDonald anticipates claims 1–13 and that MacDonald with Ding renders claims 2, 3, and 7 obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Preliminary Response, Reply, and Sur-reply and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–13 of the ’728 patent.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther

    “figures and substantively identical specifications. See Pet. 16, 26; Prelim. Resp. 21; Ex. 1012 ¶¶ 75–76. We agree with Petitioner that the Specifications of the parent applications, MacDonald, and the ’728 patent (“the common Specification”) do not disclose expressly the claimed pitch range of 5–500 microns. We also agree with Petitioner that the pitch range must be derived from the disclosed values of diameter of the pillars and spacing between pillars. Pet. 3, 18–22; Ex. 1012 ¶¶ 98–112, 123–129. We further agree with Petitioner that none of the derived pitch ranges aligns perfectly with the claimed pitch range. Pet. 21, 23; Ex. 1012 ¶ 120. Petitioner presents sufficient argument and evidence that the common Specification may not provide sufficient “blaze marks” for the claimed pitch range and that the derived pitch ranges may not reasonably convey to one of ordinary skill in the art the claimed pitch range. Pet. 17–26; Ex. 1012 ¶¶ 92– 140. Patent Owner disputes, at least, whether the common Specification provides adequate “blaze marks” and whether the derived pitch ranges would reasonably convey the claimed pitch range. Prelim. Resp. 11–18. The parties’ dispute presents a factual issue that would benefit from a fuller record developed at trial. Gen. Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1371 (2018) (“Sufficiency of written description is a question of fact.”).” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artOther

    “Petitioner contends that MacDonald is prior art under § 102(a)(1) because MacDonald was published a year before the filing date of the application that issued as the ’728 patent. Pet. 7. If the ’728 patent is entitled to the benefit of the filing dates of the PCT and ’111 applications (collectively, “the parent applications”), then MacDonald would not qualify as prior art, as argued by Patent Owner. Prelim. Resp. 27–28.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “3. Claims 1–13 Petitioner argues with citations to MacDonald and declarant testimony that, because MacDonald has the same figures and substantively same Specification, MacDonald anticipates independent claims 1 and 9. Pet. 26– 37, 53–58. In particular, for the claimed pitch range, Petitioner argues that, because MacDonald discloses pillar spacings between 1–500 microns and pillar diameters between 5–500 microns, MacDonald discloses, at least, two pitches of 6 microns and 253.5 microns, both of which are in the claimed pitch range. Id. at 36 (citing Ex. 1012 ¶¶ 176–178). For dependent claims 2–8 and 10–13, Petitioner argues with citations to MacDonald and declarant testimony that MacDonald discloses all their limitations. Id. at 37–53, 58– 62. Other than the arguments discussed above regarding written description and effective filing date, Patent Owner does not argue that Petitioner fails to show that MacDonald discloses the limitations of claims 1 and 9. See generally Prelim. Resp. Patent Owner also does not provide separate arguments for the challenged dependent claims. See generally id. Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its anticipation challenge of dependent claims 1– 13.” slip op. at 20

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,309,728
• Becton, Dickinson And Company v. Baxter Corporation EnglewoodAll claims unpatentable
  PTAB · Apr 29, 2020 · IPR2019-00121 · APJ Paul J Korniczky · IPR · Final written decision

  Claims 1–19 are unpatentable; the revised motion to amend substitute claims 20–38 is denied for lack of written-description support and enablement.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Accordingly, “the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003).” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Accordingly, a party that petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal quotations and citations omitted).” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner

    “c. Conclusion Petitioner has shown by a preponderance of the evidence that” slip op. at 60

  • 112 supportMotion to amend, deniedDenied

    “claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4– 8. Accordingly, Patent Owner must demonstrate: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial, (3) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of filing date is sought); and (4) the amendment does not seek to enlarge the scope of the claims of the patent or” slip op. at 83

  Patent outcomesUS 9,474,693 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,474,693

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.